2. Section 102(b)'s 'on sale' and 'disclosure' determinations

As Kristin Biedinger of Tucker Arensberg P.C. points out on Law.com, "[t]he post-AIA grace period only excludes from the prior art those disclosures that can be attributed, either directly or indirectly, to the inventor . . . . The personal nature of this new grace period, combined with the new 'first inventor to file' patent system, has significant implications for companies that previous postponed the filing of patent applications."[1]

Adam M. Breier writes on the Full Disclosure site that the U.S. Patent and Trademark Office's rules and guidelines relating to the AIA first-inventor-to-file (FITF) provisions qualify the inventor exception AIA applied to the one-year grace period for disclosure as prior art.[2] Breier quotes the USPTO's Final FITF Guidelines:

1. “There is no requirement . . . that the mode of disclosure by” an inventor “be the same as the mode of disclosure of the intervening” disclosure. For example, the former could be a technical article and the latter could be a sale or public use, or vice versa.

2. Where an inventor “had publicly disclosed elements A, B, and C, and a subsequent” disclosure contains “elements A, B, C, and D, then only element D” of the intervening disclosure “is available as prior art.” (Emphasis added.)

3. If a subsequent disclosure “is simply a more general description” of subject matter previously publicly disclosed by an inventor, the § 102(b)(1)(B) exception applies, such as if an inventor “had publicly disclosed a species, and a subsequent intervening” disclosure simply contains “a genus (i.e., provides a more generic disclosure of the species).” The disclosure of an “alternative species not also disclosed” by an inventor would, however, “be available as prior art.” (78 Fed. Reg. at 11077.)[3]

Breier points out that the USPTO guidelines "do not constitute official rulemaking or have the force of law." Because of the uncertainty surrounding the changes, Breier states, " it remains unclear how the grace period will be applied in practice, so practitioners may want to avoid relying on it, except in rare circumstances."[4]

In light of the uncertainty relating to how courts will ultimately interpret the new disclosure guidelines, any attempt to predict the effect of the changes on software patents is speculative.